Kazunori Mototsu

Patent Trials and Appeals Board

Mar 25, 2020

13549953 - (D) (P.T.A.B. Mar. 25, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/549,953 07/16/2012 Kazunori Mototsu 11333/547 9672
757 7590 03/25/2020
BGL
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
WHATLEY, BENJAMIN R
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
03/25/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAZUNORI MOTOTSU

Appeal 2019-001716
Application 13/549,953
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 21–26 and 28–34. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed July 16, 2012
(“Spec.”), the Final Office Action dated Apr. 23, 2018 (“Final Act.”), the
Appeal Brief filed Sept. 17, 2018 (“Appeal Br.”), the Examiner’s Answer
dated Oct. 17, 2018 (“Ans.”), and the Reply Brief filed Dec. 14, 2018
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Sysmex Corporation is identified as the real party in
interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The invention relates to a sample analysis device that is capable of
carrying out multiple processes. Spec. ¶ 2. The Specification describes a first
sample processing portion being arranged in a first layer of the sample
analysis device and a second layer positioned above or under the first layer
in which to carry out another part of the plurality of processes. Id. ¶ 6. The
Specification discloses embodiments in which the sample processing portion
can be arranged on an uppermost layer so that a user can easily set test tubes
on a sample rack and a detection portion (optical detection unit) can be
arranged on a lower darker second base to which external light hardly
reaches. Id. ¶¶ 83, 87. According to the Specification, the detection of light
emitted from measurement specimens can be more precisely performed with
the optical detection unit arrangement in a darker position. Id. ¶ 87.
Claim 21, reproduced below, is the sole independent claim in this
appeal and illustrative of the subject matter on appeal (emphasis added).
21. An immunoanalyzer having a plurality of layers that
analyzes a measurement component, which comprises an
antibody or antigen in a sample, and configured to carry out a
plurality of processes on the sample in a container, the
immunoanalyzer comprising:
a controller;
a first sample processing portion in a first layer including
a reaction table that is configured to prepare a reaction product
in the container, the reaction product including a magnetic
particle, the measurement component, and an enzyme that is
capable of binding to the measurement component, and a
dispensing unit configured to dispense into the container a
substrate that reacts with the enzyme, the first layer comprising
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an uppermost layer of the immunoanalyzer, the first sample
processing portion including:
a reagent set unit accommodating a plurality of reagents
that are components of the reaction product and a reagent that
includes the substrate,
the dispensing unit including a reagent dispensing arm
configured to dispense the reagent including the substrate from
the reagent set unit into the container under direction of the
controller, and a sample dispensing arm configured to dispense
the sample into the container under direction of the controller;
a second sample processing portion in a second layer of
the immunoanalyzer positioned below the first layer and
including an optical detection unit configured to detect light
generated by a reaction between the enzyme and the substrate in
the container,
wherein the first layer does not include any part of the
optical detection unit, and the second layer does not include any
part of the reagent dispensing arm, the reagent set unit, or the
sample dispensing arm; and
a container transfer portion configured to transfer the
container including the reaction product, the substrate, the
reagent and the sample, under direction of the controller, from
the first layer to the second layer.
Appeal Br. 15 (Claims Appendix).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
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Appellant’s arguments, we are not persuaded of reversible error in the
appealed rejections.
The Examiner rejects claims 21–26 and 28–34 as follows. Final Act.
3–11; Ans. 3–11.
Claims 35 U.S.C. § Basis/References
21–26, 28, 32–34 103 Ootani,3 Fritchie4
29–31 103 Ootani, Fritchie, Kitaoka5

We separately address the prior art rejections below.

Obviousness over Ootani and Fritchie
Appellant argues the rejection of claims 21–26, 28, and 32–34 over
Ootani and Fritchie as a group. Appeal Br. 13. Accordingly, claims 22–26,
28, and 32–34 stand or fall together with claim 21 from which they depend.
37 C.F.R. § 41.37(c)(1)(iv).
Appellant contends the Examiner erred in rejecting claim 21 because
contrary to the Examiner’s position, the combination of Ootani and Fritchie
would result in an analyzer having both a detection unit and reagent/sample
dispensing equipment on each of two levels. Appeal Br. 10–11. According
to Appellant, because Fritchie requires a dispenser located in the vicinity of
the luminescence reader to produce the reaction product to be analyzed, if
Ootani’s 96-well plate alone is transferred to a lower layer for measurement
per the Examiner’s rejection, it would not include a reaction product. Id. at
10–11. Appellant argues selectively moving only Ootani’s detector to a

3 US 2007/0172390 A1, published July 26, 2007.
4 US 2009/0117620 A1, published May 7, 2009.
5 US 2008/0254545 A1, published Oct. 16, 2008.
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second level would require a major redesign and change the principle of
operation of Ootani to change the sample transport hardware needed to
accommodate the measurement operation on an additional level. Id. at 12.
According to Appellant, Ootani’s detector occupies a much smaller
surface area than its other components, therefore the Examiner’s proposed
modification “would, at most, not result in a significant reduction in analyzer
surface area, and further may not reduce the surface area at all.” Id. at 13.
Appellant characterizes this as a “negligible possible reduction in footprint”
that “points to the lack of motivation” to make the proposed modification.
Id. Appellant emphasizes the inventor’s stated reasons for locating the
detection unit on a separate level: (1) to be in a “darker position” and (2) for
less frequent access by a user. Id.
The Examiner responds that the rejection relies on Ootani’s container
transfer portion 122, rather than Fritchie’s container transfer portion, which
transfer portion 122 is configured to transfer container (cuvette) 8 including
the reaction product to Ootani’s detector 120. Ans. 11 (citing Ootani ¶¶ 90,
123, Figs. 1, 2). The Examiner finds Fritchie’s teaching to move the location
of Ootani’s detector to provide a smaller footprint would have Ootani’s
container transfer occurring from an upper level to the detector on a lower
level as in Fritchie. Id. at 11–12 (citing Fritchie ¶ 119). Regarding Ootani’s
principle of operation, the Examiner responds that Ootani’s operation
sequence would remain the same with respect to the reaction cuvette
containing the sample and the required reagents would move from the
reaction table using Ootani’s container transfer portion 122 to the detector.
Id. at 13. The Examiner determines that the modification of Ootani would
have been an obvious shift in the location of parts. Id. at 14.
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Regarding Appellant’s argument that the reduction in surface area
would not be significant, the Examiner responds that Appellant’s argument
is not supported by any metrics or statistics and, therefore, is speculative. Id.
at 15. The Examiner states that the motivation for modifying Ootani comes
from Fritchie’s teaching that it would decrease the device’s footprint and is
not from Appellant’s Specification, which recognizes another advantage
naturally flowing from the suggestion of the prior art. Id. at 15–16.
In the Reply Brief, Appellant maintains a person having ordinary skill
in the art would not have been motivated to modify Ootani in view of the
“significant degree of mechanical and control operation reconstruction and
redesign that would be necessary” and because Fritchie teaches relocating
more components than just the luminescence reader to a lower level. Reply
Br. 4. Regarding the necessary redesign of Ootani, Appellant asserts that
Ootani’s sequence involves an installing part for installing the cuvette to
accommodate the specimen and reagents, a movement mechanism part for
transferring the cuvette to a rotatable table of secondary reaction unit, and a
lid arranged in an opening and closing manner at the installing part so that
light does not enter the installed cuvette during measurement. Id. at 5.
Appellant also contends Ootani requires additional components arranged to
discard the cuvettes after optical analysis, and the proposed modification
would require further control modifications to control and integrate
structurally and functionally different components, outweighing a relatively
small reduction in surface area of the analyzer. Id. at 5–6.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 21 as obvious over the combined
teachings of Ootani and Fritchie.
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Appellant does not dispute the Examiner’s finding that Fritchie
teaches locating a detection unit (luminescence reader) on a separate level
from the preparation of reaction mixtures in an automated analyzer device.
Nor does Appellant dispute that Fritchie teaches the floor area required by a
laboratory automation system can be reduced by positioning the detection
unit (luminescence reader) on a separate level compared to a single level
analyzer device. Instead, Appellant argues (Appeal Br. 13; Reply Br. 6) that
the space savings as applied to Ootani’s analyzer would be “negligible” or
“not result in a significant reduction in analyzer surface area.”
We are of the view that the record supports the Examiner’s findings.
Fritchie ¶¶ 117, 119. Fritchie identifies positioning the detection unit
(reader) component specifically on a lower level relative to the sample and
reagent containers for the purpose of reducing the area occupied by the
analyzer relative to a single level analyzer. Id. ¶ 119. Thus, the Examiner’s
modification of Ootani by moving the detection unit to a lower and separate
level is reasonable in view of Fritchie’s explicit teaching to do so. As such,
the Examiner’s component selection is not based on hindsight gleaned from
Appellant’s Specification.
Appellant does not argue that the “mechanical and control operation
reconstruction and redesign” of Ootani would be outside the level of skill of
a person having ordinary skill in the art, but, rather, that it would be a
“significant redesign” of Ootani’s conveyance and discarding mechanism for
a relatively small reduction in Ootani’s floor surface area. Id. at 5–6.
Appellant’s assertion (Appeal Br. 13) that the Specification provides a more
compelling reason for locating the detection unit on a lower level is not
pertinent to the obviousness analysis. These arguments fail to account for
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what the collective teachings of Ootani and Fritchie would have informed
the ordinary skilled artisan and the rationale identified by the Examiner
discussed above. “Under the correct analysis, any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007); see In re Kemps, 97 F.3d
1427, 1430 (Fed. Cir. 1996) (“Although the motivation to combine here
differs from that of the applicant, the motivation in the prior art to combine
the references does not have to be identical to that of the applicant to
establish obviousness.”).
In sum, Appellant’s arguments are not persuasive of error in the
Examiner’s conclusion that it would have been obvious to modify Ootani’s
analyzer device to have a reduced footprint by locating Ootani’s detector on
a separate layer as taught by Fritchie. Accordingly, we affirm the
Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a) over Ootani.

Obviousness over Ootani, Fritchie, and Kitaoka
Regarding claims 29–31, which depend from claim 21, Appellant
relies on the same arguments presented with respect to claim 21. Appeal Br.
13. Appellant asserts that Kitaoka does not cure the deficiencies of Ootani
and Fritchie. Id. at 14.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claims 29–31 for the same reasons discussed
above in connection with claim 21. Accordingly, we affirm the Examiner’s
rejection of claims 29–31 under 35 U.S.C. § 103(a).

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CONCLUSION
For these reasons, we uphold the Examiner’s rejections of claims 21–
26 and 28–34 under 35 U.S.C. § 103(a) as obvious over the cited prior art
references.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
In summary:
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
21–26, 28,
32–34 103(a) Ootani, Fritchie
21–26, 28,
32–34
29–31 103(a) Ootani, Fritchie, Kitaoka 29–31
Overall
Outcome
21–26, 28–34

AFFIRMED